This afternoon’s first session focused on cultural differences in trade mark enforcement, and featured several in-house counsel with broad experience of protecting brands worldwide.

Leo Longauer of Swarovski, Daniel Zohny of FIFA, Giordano Cardini of Soremartec and Katherine Tsang of Diageo along with Eni Ashihara of YKI Patent and Trademark Attorneys in Japan took part in a panel discussion moderated by Tobias Cohen Jehoram of De Brauw Blackstone Westbroek.

In a wide-ranging discussion, they talked about the importance of having breadth and diversity in their in-house teams. Diageo’s team look after brands in 180 countries and have counsel in five continents. Soremartec’s IP team has 20 people, who speak 30 to 40 languages between them.

Having team members with local expertise and language skills helps avoid problems arising from cultural misunderstandings, said the speakers. For example, the approach taken towards counterfeiters might be different in Europe compared to China, and there might be local rules and customs that it is important to be aware of. During the discussion, Emi Ashihara discussed conflicts between Japanese-language and English-language marks, including the controversial FRANK MIURA decision, ZEXSS v ZEISS and DOUBLE NELPRESS v NESPRESSO.

The panellists also talked about what qualities they look for in local counsel, and which stereotypes are untrue. For example, in the UK, is there limited protection for lookalikes and is litigation very expensive? In Italy, is there high protection for IP owners and long-winding litigation? In China, are decisions random and is effective enforcement difficult?

Finally, they looked at what impact the legal culture can have on litigation strategy. Among the conclusions were that: law, procedure and scope of protection differ widely; knowledge of local (legal) culture always helps; act glocal; take a tailored approach; and it is essential for in-house and local counsel to be open, know the business and think laterally and proactively.